China: The Gradual Expansion of Non-traditional Trademark Registration in China

There is a wide array of identifying signs for goods and
services beyond conventional words or logos. In recent years,
businesses have sought broader protection for signs that are
traditionally not registrable as trademarks, but are nonetheless
linked to their products. According to the International Trademark
Association, non-traditional marks may include product designs or
configurations, colours, scents, sounds, tastes, touch, motion and
even moving images.

With many jurisdictions revising their trademark regimes by
allowing for the registration of non-traditional marks, China has
heard the call for change and recently announced that it will
broaden its scope of registrable trademarks through amendments to
the Trademark Law, which will be enacted in 2014. However, this is
not an entirely new step. In 2001 China revised its Trademark Law
to allow for certain non-traditional marks and, beyond trademark
laws, it has also incorporated other means of protection for such
marks. Therefore, while the registration of non-traditional
trademarks is somewhat limited in China in comparison to some
jurisdictions, the upcoming reforms mean that trademark owners (or
would-be owners) will no longer be restricted to traditional marks
(ie, words and logos) and can expect to see continued and positive
changes in the Chinese trademarks arena.

Scope of trademark registration

The 2001 Trademark Law states that "any visible sign that
can serve to distinguish the goods of a natural person, legal
person, or other organization from those of another, including any
work, design, letter of the alphabet, numeral, three-dimensional
symbol and colour combination, or any combination of the above, may
be made a trademark for application for registration" (Article
8). The law allows for certain non-traditional marks to be
registered. However, on August 30 2013 China officially passed
revisions to this law, which will be enacted on May 1 2014.
Included in these eagerly anticipated changes is further expansion
to the scope of registrable trademarks. The revised Article 8 now
states that "any sign that can serve to distinguish the goods
of a natural person, legal person, or other organization from those
of another, including any work, design, letter of the alphabet,
numeral, three-dimensional symbol, colour combination, sound, or
any combination of the above, may be made a trademark for
application for registration". Thus, registration will no
longer be limited to visible signs, as sound marks have become
available. These developments have been welcomed by both domestic
and foreign entities operating in China.

Three-dimensional trademarks

A non-traditional mark that is allowed in China under both the
2001 Trademark Law and the amendments thereto is the
three-dimensional trademark. Although permitted, trademark owners
should bear in mind that the registration of three-dimensional
marks is still subject to some limitations. According to Article 11
of the Trademark Law, a mark cannot be registered if it merely
"indicates the quality, principal raw materials, function,
use, weight, quantity or other features of the goods", and
where "distinctive characteristics are lacking". However,
such a mark may be registered if it has "acquired distinctive
features through use and is readily distinguishable". Article
12 goes on to discuss the limitations of three-dimensional marks,
stating that "no application for registration of a
three-dimensional sign as a trademark may be granted, where the
sign merely indicates the shape inherent in the nature of the goods
concerned, or it is only dictated by the need to achieve technical
effects or the need to give the goods substantive value". As
such, three-dimensional trademarks are not easily granted in China,
and distinctiveness must be made clear in order to assure
registration. However, while not easily obtained, several
three-dimensional marks have been granted in China, including the
Coca-Cola bottle, the Zippo lighter, Kraft's Toblerone
chocolate bar (the packaging and the shape of the chocolate bar
itself), Rolls Royce's 'Spirit of Ecstasy' hood
ornament and Pfizer's blue diamond Viagra pill.

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